IP Australia reviews its fees every four years and adjusts them as required to cover the costs of its work in administering intellectual property rights. The most recent review started in 2023 and, following two rounds of public consultation, fee changes will be implemented from 1 October 2024.
Excess claim fees are remaining the same: AU$ 125 for each claim from 21 to 30 and AU$ 250 for each claim from 31 onwards. However, significant changes in when these fees are calculated and due to be paid are being implemented.
Currently, excess claim fees are based on the number of claims in the application when it is accepted (allowed). Any application with 21 or more claims at acceptance is issued an Invitation to Pay (ITP) excess claim fees based on the total number of accepted claims. There is a three month deadline to pay the fee.
From 1 October 2024, excess claim fees will be calculated based on the number of claims examined in the first examination report. If further claims are added during prosecution, excess claim fees may also be due when the application is accepted.
Examination can be requested with more than 20 claims. If the number of claims is reduced before the first examination report issues, the excess claim fees (if any) will be based on the number of claims examined in the report.
Excess claim fees at first examination report
For applications where examination is requested on or after 1 October 2024, excess claim fees apply to applications with 21 or more claims when the first examination report issues.
If your application has more than 20 claims when the first examination report is issued, IP Australia will issue an ITP with a deadline of one month from the date of the first examination report. The application will lapse if the excess claim fees are not paid, but it can be restored by paying the excess claim fees any time before the acceptance deadline (12 months from the date of the first examination report).
When an ITP is paid at this stage, no fees will be due at acceptance unless the number of claims is increased during prosecution.
Additional excess claim fees may be due at acceptance
If the number of claims in an application increases after the first examination report is issued, either from fewer than 20 to more than 20; or over the number that were examined in the first report (if 21 or more claims were examined), an ITP will be sent for excess claim fees at acceptance.
Where the number of claims increases from 20 or fewer to more than 20, the excess claim fees will be for the maximum number of claims present during prosecution.
If an ITP was paid after the first examination report, and the number of claims increases, the excess claim fees at acceptance will be based on the maximum number of claims present during prosecution but will take into account any payment made after the first examination report.
Scenarios for excess claim fees
No excess claim fees due
Examination is requested with:
- 20 or fewer claims; or
- more than 21 claims, but the number of claims is reduced to 20 or fewer before the first examination issues.
No excess claim fee will be due when the first examination report issues.
If there are 20 or fewer claims throughout prosecution of the application, no excess claim fees will be due at acceptance.
Excess claim fees at first examination report
More than 21 claims are examined in the first examination report.
Excess claim fees based on the number of claims examined will be due within one month of the date of the report.
If the number of claims is maintained or reduced during prosecution of the application, no further excess claim fees will be due.
Excess claim fees due at acceptance
During prosecution of the application the number of claims in the application is increased to more than:
- 20 (if there were 20 or fewer at the time of the first report); or
- the number of claims paid for after the first examination report.
An ITP will issue at acceptance based on the maximum number of claims present in the application during examination. This is a change from the current approach, which calculates the fees based on the number of accepted claims.
What this means for Australia patent applicants
These changes affect applications for which examination is requested on or after 1 October 2024. If you wish to obtain an initial view from an Australian examiner for a pending application that includes more than 20 claims, we recommend requesting examination by 30 September 2024.
IP Australia has indicated it will issue a six-month warning to applicants that examination is expected to begin to allow time to reduce the number of claims before the first report issues. However, applicants may wish to take a prudent approach and file amendments at the time of requesting examination, or shortly thereafter, to ensure that excess claim fees are not inadvertently incurred. In addition, applicants should be aware of the change from excess claim fees based on the number of accepted claims (irrespective of how many claims are present during prosecution) to excess claim fees based on the highest number of claims present during prosecution, even if the number of claims is reduced so there are 20 or fewer claims at acceptance.
If you would like advice on the changes to excess claim fees, or any other aspect of IP in Australia or New Zealand, please get in touch.
